The unexpected registration of the “Black Friday” trademark in Bulgaria by the Romanian company Dante International S.A., owner of online retailers eMag and Fashion days, was widely covered by media and commented on the Internet last week.
There are a total of 5 trademarks
2 figurative and 3 word marks, containing the phrase “Black Friday” and its equivalent in Bulgarian – “Черен Петък” – registered before the Bulgarian Patent Office (the BPO). It is noteworthy that two of the registered word marks represent simply the phrase in English and Bulgarian, with no other word and figurative elements.
Needless to say, merchants became very concerned about the future use of the concept, which gained substantial popularity in Bulgaria these recent years as a special day for big sales and discounts. The concerns were particularly strong in view of the approaching of this year’s Black Friday.
In fact, Dante International’s trademarks were applied for in 2015 and registered by January 2016, but somehow left unnoticed up to the eve of the promotional event. Rumors spread, that some big retailers and shopping malls got cease and desist letters from the new trademark owner, forbidding them to use the words. Apparently most of the businesses affected were advised by their respective lawyers not to use the phrase. As a result, most of them made last minute changes to their Black Friday advertisement campaigns, changing billboards etc.
Most of the comments online regarding this issue could be summed up as to how the BPO has allowed the registration of such generic notion as Black Friday.
Indeed, the Office conducted the procedure without raising any of the absolute grounds for refusal of registration under the Trademarks and Geographical Indications Act (TGIA), applicable when:
- The sign applied for is not a trademark within the meaning of the law;
- The mark has no distinctive character;
- The mark consists exclusively of signs or indications, which have become customary in the current language or in the established practices of the trade in the Republic of Bulgaria in respect of the goods or services claimed;
- The mark consists exclusively of signs or indications, which indicate the type, quality, quantity, purpose or other characteristics of the goods or services.
Registration in Class 35
It should be noted that, for the purposes of assessing whether a mark has a distinctive character and whether it is descriptive, the class of goods or services, for which protection is sought, must be determined. For example, the phrase ‘Black Friday’ should not be descriptive of an alcoholic beverage in Class 33. The concept’s generic meaning is a reference to a traditional annual one-day sales campaign for various goods and services.
Dante International’s trademarks, in turn, are registered only in Class 35 – “Advertising; business management; business administration; office functions”. It will be interesting to trace the use of the registered trademarks in practice. However, at first glance it seems obvious that the purpose of the registrations is for the registered phrase to be used to refer to sales promotions concerning variety of goods and services.
According to the explanatory notes to the Nice Classification, Class 35 mainly covers services rendered by persons or organizations principally with the object of: (1) assistance in the operation or management of a commercial undertaking, or (2) assistance in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.
In this respect, we find it controversial whether the designation of a sales promotion constitutes a stand-alone service within Class 35 at all.
Furthermore, we assume that the announcement of a “Black Friday” is a service by itself, hence the popular generic name of this service should not be registrable as a trademark because of lack of distinctive character or descriptiveness.
Moreover, our view is that such registered mark would not fulfill the primary purpose of a trademark, namely – to identify one merchant’s goods or services and serve as an indicator of origin.
The registration of a “Black Friday” trademark in Bulgaria is far from unique
Doubts as to whether the mark is registrable or not do not seem to be shared by other national patent offices. Bulgarian registrations are only a part of Dante International’s strategy to register the phrase “Black Friday” in several countries. The trademark is already registered in Class 35 in Romania, Hungary and Croatia and is awaiting registration for Poland, where it is also applied for in Classes 38 and 42. However, for the sake of accuracy, we have to emphasis that the words “Black Friday” without the addition “by eMag” have been registered only in Bulgaria.
Of course, it turns out that Dante International S.A. have not been so innovative in this respect. There are dozens of ‘Black Friday’ registrations worldwide, mostly in the US, Mexico and Brazil, but also in many European countries, including at EU level. In Europe, the peak of registrations is in 2014-2015.
The European Union Intellectual Property Office (EUIPO) seems to be more careful about the registration of the phrase “Black Friday”, but it also has registered trademarks containing it, albeit with additional word elements and in the form of figurative trademarks.
Nevertheless, at the end of 2014, the EUIPO refused to register a figurative mark “BLACK FRIDAY SALE” in Class 35 on the grounds of Art. 7 (1) (b) and 7 (1) (c) – the mark is devoid of any distinctive character or consists primarily of signs or indications which may serve, in trade, to designate the type, quality, quantity (…) or other characteristics of the goods or service.
In addition, there is one trademark, consisting of the words “Black Friday” only, which has been refused registration before the EU Office. Unfortunately, our hope to draw on EUIPO’s valuable arguments with regard to the registrability of the phrase was not justified. The refusal is based on Art. 8 (1) (b) of Regulation (EC) No 207/2009 on the Community trade mark. EUIPO considered in relation to an opposition that, because of its similarity to an earlier figurative trade mark containing the text ‘Black Friday, El Corte Inglés’ and the identity or similarity with the earlier Community combined trade mark, there was a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
In relation to the above, the fact that the application for the word mark “Black Friday” has reached a stage of opposition, shows that EUIPO also considers it to be generally registrable in class 35.
Registration before the BPO is a fact. Where do we go from here?
Despite the positive pronouncement of the national Patent Office and, as we can see, of other jurisdictions, absolute grounds for refusal due to lack of distinctive character or descriptiveness can still be relied upon by any interested party in a cancellation procedure under the Trademarks and Geographical Indications Act. It is interesting how the court would appreciate the perception of the Black Friday concept by the Bulgarian consumer.
Next, it is also interesting how exactly Dante International will make use of the trademark so that they are not vulnerable under the terms of Article 25 of the TGIA and, of course, whether they intend to enforce it on the Bulgarian market. In the heat of the scandal the company hurried to make a statement that they will allow other companies to use the Black Friday mark in the upcoming promotional period.
In Romania and Hungary, the respective trademarks are registered in 2013 and 2014, and it would be interesting to trace how the national trademark proprietor made use of the marks and how they approached their competitors for the relevant markets in connection to previous Black Friday sales.
However, the unfortunate reaction of a part of Bulgarian retailers in the aftermath of the event consisted in mass filing for “Black Friday” variations such as “Black weekend”,“Mad Friday” etc. which will most likely further distort the Black Friday concept and bring some extra confusion as to the organization of the sales promotions next year.
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